Flexibility in prosecuting certain European patent applications is currently restricted by the inability to obtain a search report for claims which the EPO considers to relate to more than one invention. In such cases, the EPO searches the invention first presented in the claims and raises a lack of unity objection for all other claims. Those other claims may then only proceed by filing one or most divisional European patent applications.
At present, the EPO will not examine a European application derived from a PCT application (Euro-PCT application) if it has not itself performed a search in respect of the invention for which protection is sought. It follows that the examination of a Euro-PCT application in the European phase is conditional on the availability of the results of:
– either an international search carried out by the EPO as International Searching Authority/Supplementary International Searching Authority (ISA/SISA) in respect of the invention for which examination is requested;
– or a supplementary European search carried out by the EPO as designated/elected Office in respect of the invention for which examination is requested.
However, for any application for which (i) the supplementary European search report under Article 153(7) EPC or (ii) the first communication under Article 94(3) EPC or Rule 71(3) EPC has not been drawn up as of from 1st November 2014, under amended Rule 164 EPC it will be possible for the applicant to pay, within a period of two months, one or more further search fees in respect of any unsearched inventions claimed upon entry into the European phase in order for these to be covered by a further search. Thereafter, the applicant may select any invention searched by the EPO for further prosecution of the application. This option is available both if a supplementary European search must be carried out (the EPO was not the (Supplemental) International Searching Authority) and if the supplementary European search is dispensed with because the EPO acted as (Supplemental) International Searching Authority for the application concerned.
Under the new Rule, the first invention listed in the claims will be searched but the Applicant will be given an opportunity to pay for a search for other inventions. The new rule change will enhance the applicant’s flexibility in prosecuting a European application without necessarily needing to file a divisional application.
Isabel Meenan & Yvonne McKeown